Haggerty v. Rawlings Mfg. Co.

• Decision Date: 25 September 1926
• Docket Number: No. 7317.,7317.
• Citation: Haggerty v. Rawlings Mfg. Co., 14 F.2d 928 (8th Cir. 1926)
• Parties: HAGGERTY et al. v. RAWLINGS MFG. CO.
• Court: U.S. Court of Appeals — Eighth Circuit

14 F.2d 928 (1926)

HAGGERTY et al. v. RAWLINGS MFG. CO.

No. 7317.

Circuit Court of Appeals, Eighth Circuit.

September 25, 1926.

Brayton G. Richards, of Chicago, Ill. (Joshua R. H. Potts, of Chicago, Ill., on the brief), for appellants.

Paul Bakewell, of St. Louis, Mo., for appellee.

Before KENYON and VAN VALKENBURGH, Circuit Judges, and JOHN B. SANBORN, District Judge.

KENYON, Circuit Judge.

This is an appeal from a judgment and decree of the District Court of the United States for the Eastern District of Missouri, dismissing the bill of appellants for want of equity. The controversy is the usual one arising where infringement of patent is charged. The patent alleged to have been infringed is one for an athlete's guard issued to appellant, Haggerty, and his assignee, Izenstark, on June 12, 1917, upon an application filed January 22, 1917.

The defenses presented were invalidity of the so-called Haggerty patent, and noninfringement.

It was the opinion of the trial court that the alleged prior uses were established by the evidence, and the court, in sustaining the patent, limited it, in view of the prior art, to a very narrow sphere.

Claims 1, 2, 3, and 4 of the Haggerty patent are the ones alleged to be infringed. Claim 1 is as follows:

"A device of the class described comprising a guard arranged to fit against the back of the wearer; guards hingedly connected with the opposite sides of said back guard; hip guards hingedly connected with said side guards and depending therefrom; and means for securing the device about the body of the wearer, substantially as described.

Claims 2, 3, and 4 are substantially the same as claim 1, and the differences or claimed additions are not important here.

The Haggerty invention is claimed to consist of three parts, two being duplicates. One part is a central back guard. The two side guards and hip guards hingedly connected with the side guards constitute the other parts.

It is contended by appellant that the three-part guard of the Haggerty patent was a novelty at the date application was filed for the patent; that there has been pronounced commercial success of the Haggerty guard, and that this must be considered by a court in determining the question of patentable novelty; that the guard has been used by the appellee, and that this is an admission of its utility and should also be considered in determining patentable novelty; that the alleged prior uses relied upon by appellee to defeat the patent rest in the memory of witnesses, and that such testimony is not sufficient to defeat or limit the patent.

It is the claim of appellee that, if the construction of claims 1, 2, 3, or 4 of the Haggerty patent are broad enough to include within their scope the appellee's football trousers, which are claimed to be infringements of the Haggerty patent, such patent is void.

The court found that guards having side, hip, and back pads were old, and that the evidence showed they were used for more than three years before the application of appellants or their grantor for a patent was filed, and that the great weight of the evidence was that spine pads, side pads, and hip pads extending above and below the waist line and hingedly connected together were made by appellee as early as 1914, and were made and used by others as early as 1912.

The court held that prior use was sufficiently established to defeat the broad claims of appellants' patent, so far as this action is concerned, but forecast narrow limits within which the patent might be valid, and refused to declare the same void as lacking novelty, limiting it, however, substantially to the particular manner and means of attaching the spine pad to the lateral side and hip pad, and held that so construed the device of appellee under the so-called Whitley patent of February 14, did not infringe. The court said in its opinion: "Barring the elastic webbing in the waist line (patented by Whitley in February, 1922, as said already) defendant has been putting spine pads, side pads, and hip pads in athletic trousers, substantially as shown in the alleged infringing device, since 1914, and others did this earlier, even, than this date. I think the great weight of the evidence in the case shows this fact conclusively."

Appellants claim that the evidence is not of the character required by the law to show prior use to defeat the patent; urging the rule that such prior use must be established beyond a reasonable doubt, and that the memories of witnesses are not sufficient. Cantrell et al. v. Wallick, 117 U. S. 689, 6 S. Ct. 970, 29 L. Ed. 1017; The Telephone Cases, 126 U. S. 1, 8 S. Ct. 778, 31 L. Ed. 863; The Barbed Wire Patent, 143 U. S. 275, 12 S. Ct. 443, 36 L. Ed. 154; Adamson v. Gilliland, 242 U. S. 350, 37 S. Ct. 169, 61 L. Ed. 356; H. Mueller Mfg. Co. v. Glauber, 184 F. 609, 619, 106 C. C. A. 613.

The view of this court on that subject is expressed in Grupe Drier & Boiler Co. v. Geiger, Fiske & Koop, 215 F. 110, 114, 131 C. C. A. 418, 422. "The rule is that to defeat a patent by oral testimony of prior use the proof must be clear, satisfactory, and beyond a reasonable doubt. * * * But the standard is not an impossible one, and each case must be determined upon its own facts. The particular kinds of flue-cleaning devices installed in 1897-98 and 1903-04 would naturally have impressed themselves upon the memory of those who planned and put them in and of those who afterwards used them. The corroboration of the plan of the draughtsman is persuasive. It is not a case of casual observation of a mechanical detail by persons not particularly interested. These and other considerations, including the character of the witnesses and the fact that some of them appear wholly disinterested, have convinced us that a conveyor in the bottom of the draft flue to carry the deposit there into the drier cylinder was not the discovery of the patentee."

The rule contended for by appellants is undoubtedly the one to be applied where the improvement is a complex mechanism, and, as said by the court in Lee v. Upson & Hart Co. et al. (C. C.) 43 F. 670, 671, "if the essence of the invention had been the nice adjustment of parts to produce a result, or if the thing to be done required genius of a superior order, the testimony would have been insufficient"; but the court also points out that less testimony is required where the matter is not such complex mechanism, and in such case it does not require the same amount of evidence to satisfy the court, and says, "The argument of the plaintiff forgets that it requires less testimony to establish a fact which was very likely to have occurred, than to establish an improbable theory." Rochester Coach-Lace Co. v. Schaefer et al. (C. C.) 46 F. 190; Sipp Electric & Machine Co. v. Atwood-Morrison Co., 142 F. 149, 73 C. C. A. 367; Crone v. John J. Gibson Co., 247 F. 503, 506, 160 C. C. A. 13.

The thing done here, at least as to a back pad, was the obvious thing to do for the purpose of meeting similar conditions, and witnesses so testify. There was no complex mechanism involved. Indeed it was an exceedingly simple device. The inherent probability of the truth of the testimony and the lack of any suggestion that the witnesses were guilty of perjury lends much credibility thereto. It appears clearly, overwhelmingly, and satisfactorily from the evidence that the side pads, hip pads, and spine pads in some kind of combination hingedly connected together were made and used long prior to the date of the Haggerty patent and were made by appellee prior thereto. The record discloses a page of appellee's catalogue of 1915, which shows football pants offered for...